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Your Source for Domain Dispute
News and Information |
Thursday,
February 15, 2007,
Vol. 8 No. 02 |
Welcome to Domain-News, a complimentary
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In
This Issue
Mattel, Inc. v. Eastwind Groups, Ltd.
As the Number of Business-Related Blogs Grow, So Do Liability Concerns
Google's German Domain Name Hijacked
Soccer Phenom Beckham Spurs Domain Name Registrations
Recent
Decisions
Metro-Goldwyn-Mayer Studios Inc. v. World Readable c/o R.L. Cadenhead
Complainant, Metro-Goldwyn-Mayer
Studios Inc., filed a claim against Respondent,
World Readable c/o R.L. Cadenhead,
for Respondent’s registration of the <wargames.com>
domain name. The Panel found Complainant had rights in the WARGAMES mark and
that the disputed domain name was identical to this mark. Complainant
contended that Respondent did not make an active use of the disputed domain
name until after the filing of their UDRP Complaint. Respondent asserted
that it had purchased the <wargames.com>
domain name with the intent of operating a website that would sell war games
over the Internet. Upon receiving the Complaint, Respondent moved up its
anticipated date of displaying the website to show that Respondent had been
developing its business over the past few years. The Panel found sufficient
evidence was presented to show that Respondent had been preparing to use the
disputed domain name in connection with a bona fide offering of goods
and services under Policy ¶ 4(c)(i). Accordingly, the Panel denied
Complainant’s request to transfer the <wargames.com>
domain name.
Metro-Goldwyn-Mayer Studios Inc. v. World Readable c/o R.L. Cadenhead,
FA 868828 (Nat. Arb. Forum Jan. 31, 2007).
Javacool Software
Development, L.L.C. v Elbanhawy Investments
Javacool Software Development, L.L.C., Complainant,
brought an action against Elbanhawy Investments, Respondent, concerning two
of Respondent’s domain names, <spywareblaster.com> and <spywareguard.com>.
The Panel found Respondent’s disputed domain names to be identical to two
marks Complainant registered with the United States Patent and Trademark
Office on May 2, 2006, and February 14, 2006, respectively. Although records
showed that Respondent had registered the disputed domain names in November
2002, Respondent failed to support its claims of rights or legitimate
interests in the disputed domain names. The issue of bad faith turned on the
timing of Respondent’s registration of the disputed domain names in relation
to Complainant’s initial use of its marks in commerce. Although Complainant
did not register its marks until 2006, it submitted substantial evidence
showing that the SPYWAREBLASTER and SPYWAREGUARD marks were initially used
in commerce in October 2002 and January 2003, respectively, and that both
marks were well-known and the products were highly downloaded. The Panel
found that there was sufficient evidence to show that Respondent used both
disputed domain names in bad faith. The Panel then analyzed whether
Respondent had registered the disputed domain names in bad faith. The Panel
transferred the disputed domain name to Complainant, determining that
Respondent registered the <spywareblaster.com> domain name in bad
faith because it was aware of Complainant’s use of its mark when registering
the disputed domain name. Conversely, the Panel then determined that there
was insufficient evidence to show that Respondent had registered the <spywareguard.com>
domain name in bad faith, as Complainant had not yet used its SPYWAREGUARD
mark in commerce when Respondent registered the disputed domain name.
Therefore, Complainant’s claim against the <spywareguard.com> domain
name was denied.
Javacool Software Development, L.L.C. v. Elbanhawy Investments, FA
836772 (Nat. Arb. Forum Jan. 2, 2007).
Mattel, Inc. v. Eastwind Groups, Ltd.
Complainant, Mattel, Inc., filed a claim against
Eastwind Groups, Ltd., for Respondent’s registration of the <barbiegirl.com>
domain name. Respondent, a business based in the United States, claimed to
incorporate the descriptive terms for its website, “The girl's guide for
barbecue supplies and everything for your barbie.” The Panel found
Respondent’s mark to be confusingly similar to Complainant’s famous BARBIE
mark because it incorporated Complainant’s mark in its entirety, and it held
that marketing and use were not factors in the test of confusing similarity
under Policy ¶ 4(a)(i). Since there was no evidence that Respondent had
posted any barbeque-related page at the disputed domain name prior to notice
of the dispute, the Panel found that Respondent had no rights or legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel
additionally found bad faith registration and use under Policy ¶ 4(a)(iii)
because, prior to notice of the dispute, Respondent had used the disputed
domain name for advertising links unrelated to barbecuing. The Panel ordered
the transfer of the <barbiegirl.com> domain name from Respondent to
Complainant.
Mattel, Inc. v. Eastwind Groups, Ltd., FA 849009 (Nat. Arb. Forum
Jan. 12, 2007).
Med Help
International, Inc. v. [Unknown Registrant]
Complainant, Med Help International, Inc., filed a
claim under the UDRP against Respondent, [Unknown Registrant], registrant of
the <medhelp.com> domain name. Complainant and Respondent previously
had a mutual agreement where Respondent would redirect the disputed domain
name to Complainant’s website, though that agreement expired in April 2004,
and Respondent subsequently redirected the disputed domain name to one of
its own websites. The Panel found that Respondent’s redirecting of the
disputed domain name to Complainant’s website qualified as a bona fide
offering of goods or services under Policy ¶ 4(c)(i), and thus established
rights or legitimate interests in the <medhelp.com> domain name. The
Panel also held that due to the generic nature of the disputed domain name,
Complainant did not hold exclusive rights in the MED HELP mark. Finding that
Complainant thus failed to satisfy Policy ¶ 4(a)(ii), the Panel declined to
transfer the disputed domain name.
Med Help International, Inc. v. [Unknown Registrant], FA 868825
(Nat. Arb. Forum Jan. 22, 2007).
The Association of
Junior Leagues International Inc. v This Domain Name My Be For Sale c/o
Legend .name
Complainant, The Association of Junior Leagues
International Inc., filed a claim against Respondent, This Domain Name My Be
For Sale c/o Legend .name, seeking transfer of the <jl.org> domain
name. The Panel found the disputed domain name to be identical to
Complainant’s registered JL trademark that Complainant had used since 1901.
Furthermore, the Panel found Respondent had failed to establish rights or
legitimate interests in the disputed domain name by registering the disputed
domain name as “This Domain Name My Be For Sale c/o Legend .name,” using the
disputed domain name to generate click-through income by diverting visitors
to websites unrelated to Complainant, and attempting to sell the disputed
domain name registration to Complainant within a month of initial
registration. As the Panel also found that Respondent’s use of the goodwill
associated with Complainant’s mark for commercial gain indicated bad faith
in accordance with ¶ 4(b)(iv), the Panel transferred the disputed domain
name to Complainant.
The Association of Junior Leagues International Inc. v. This Domain Name My
Be For Sale c/o Legend .name, FA 857581 (Nat. Arb. Forum Jan. 4,
2007).
Trek Bicycle Corp. v.
Image G/Ikonographics
Complainant,
Trek Bicycle Corp., commenced an action against Respondent, Image G/Ikonographics,
for the transfer of the <trek.com> domain name. The Panel found that
the disputed domain name was identical to Complainant’s TREK mark and
confusingly similar to Complainant’s TREK TRAVEL mark under Policy ¶ 4(a)(i).
Respondent asserted rights and legitimate interests in the disputed domain
name by offering evidence that it had registered the <trek.com>
domain name for use in connection with a Star Trek-oriented website in
cooperation with the owner of the Star Trek franchise, Paramount. However,
the Panel found that such use never came to fruition, and because Respondent
had used the disputed domain name to display hyperlinks that resolve to
websites offering goods in direct competition with Complainant, Respondent
lacked rights and legitimate interests under Policy ¶ 4(a)(ii). Under Policy
¶ 4(a)(iii), the Panel found that there was insufficient evidence to show
that Respondent had registered the disputed domain name in bad faith. The
Panel thus found that Complainant had failed to establish all three required
Policy elements, and thus denied transfer of the <trek.com> domain
name.
Trek Bicycle Corporation v. Image G/Ikonographics, FA 852695 (Nat.
Arb. Forum Jan. 19, 2007).
E-PRACTICE
As the Number of Business-Related Blogs Grow, So
Do Liability Concerns
Consumers surfing the Internet
looking for more information on Wal-Mart can now simply access an
employee-operated Wal-Mart blog to learn about new store openings, the
company’s economic impact in the communities it serves, employees’
perspectives of Wal-Mart, and many other things. In 2006, employees of other
large corporations began to follow this trend and manage their own business
blogs. According to a prominent
Fortune 500 Business Blogging Wiki, as of October 2006, eight percent of
Fortune 500 companies have employees utilizing blogs that provide
information on the company's products and services.
While the percentage of companies
with business-related blogs is growing, their use is still relatively low.
One probable reason might be that employees may not want to
assume legal liability over potentially infringing content. In providing
information about a company, employees may, unknowingly or not, divulge
trade secrets, infringe on the company’s copyrights, or violate other
intellectual property laws. Employees might also be held liable for
defamation if they post negative comments about their company. There have
been numerous lawsuits litigated over these issues, and
so far employers have won most of them.
Moreover, there is growing
concern over the content posted by readers of one business-related blog. In
August 2006,
Traffic-Power.com sued Aaron Wall, the operator of
SEOBook.com, a blog addressing search engine optimization, for
publishing some of the company’s trade secrets and posting various
defamatory remarks about the company. The case is significant because the
remarks were made by readers who posted their own comments to Mr.
Wall’s blog. According to the Wall Street Journal, legal analysts
believe that this lawsuit could become an indicator of the extent to which
bloggers can be held liable for defamatory remarks, as well as the
publication of trade secrets or other intellectual property, posted by
readers of the blog.
Currently, the standards are
somewhat ambiguous.
In 2003, the Ninth Circuit Court of Appeals held that the operator of a
website can post material written by others without being held liable for
that content. On the other hand, the
California Court of Appeals held in 2006 that blog operators can be
exposed to increased liability if they hold themselves out to be publishers
that control the content of the blog. As the amount of litigation continues
to increase on these issues, the extent of bloggers’ liability should become
more transparent, encouraging or deterring many others to join the growing
trend of business-related blogging.
More information on the law as it
relates to blogging can be found in
When a Business Begins a Blog: It’s Easy, but is it Safe?
By John E. Ottaviani, John W. Bagby and Kristie D. Prinz.
This article has also been published in the American Bar Association's
Business Law Today Volume 16, Number 3 January/February 2007.
In
The News
Unilever Hires Domain Guards
HostSearch.com, Jan. 27, 2007: Unilever, a large
corporation that manages and owns brands such as Dove soap, Surf detergent,
and Vaseline lotion, among many others, has hired NetNames to help protect
its brands online. After hiring law firm Baker & McKenzie to manage its
global trademarks, Baker & McKenzie turned to NetNames to manage Unilever’s
domain names. Unilever currently holds the registrations for 6,300 domain
names, which NetNames will consolidate and manage. Unilever hopes that by
consolidating its domain names in one place, it will increase security and
have greater flexibility in its online branding strategies.
Link to Full Story
Google's German Domain Name Hijacked
PC World, Jan. 31, 2007: Visitors to the <google.de>
domain name, the German website of Google, were briefly surprised to find
that the familiar Google logo had been replaced by the name of a local
Internet service provider, Goneo Internet, along with a message stating that
no content was available. Google had its website restored within
approximately two hours. It now appears that Goneo Internet had acquired the
<google.de> domain name in a surprising domain name grab. At least two key
security measures failed—neither Google’s existing Internet service
provider, nor the service provider that took over the website, conducted the
checks required for a change in domain name registration. eBay had a similar
experience with the <ebay.de> domain name in 2004.
Link to Full Story
Say Goodbye to “.Um”…
FoxNews.com, Jan. 24, 2007: ICANN has decided to
eliminate the “.um” country-code top-level domain (“ccTLD”). “.Um” was the
ccTLD for United States minor outlying islands and was run by the University
of Southern California’s Information Sciences Institute. In 1997, when the
Institute’s staff was in charge of the Domain Name System, they also had
control of the “.um” ccTLD and retained management of it even after control
of the Domain Name System shifted to ICANN. Use of the “.um” ccTLD was rare,
and the decision to strike it from the list of ccTLDs was driven by the
Institute’s desire to get rid of it, not by ICANN’s call for comments on how
to begin to deal with outdated suffixes. The larger U.S. territories still
have their own separate ccTLDs, including “.gu” for Guam and “.vi” for the
U.S. Virgin Islands.
Link to Full Story
…And Hello to “.Tel”
WebHosting.info, Jan. 30, 2007: Telnic Limited, the
UK-based operator of the “.tel” top-level domain, has selected NeuStar, Inc.
to operate the domain name registry for “.tel.” The “.tel” top-level domain
enables businesses and individuals to publish and manage contact information
in a directory located directly in the domain name system. A “.tel” domain
name can be used to initiate telephone conversations, Voice over Internet
Protocol (“VoIP”), instant messaging, email, SMS, and other forms of
Internet communication.
Link to Full Story
Soccer Phenom Beckham Spurs Domain Name Registrations
Vnunet.com, January 12, 2007: Cybersquatters rushed to
register domain names following the announcement that soccer star David
Beckham was leaving the Real Madrid soccer team to play for the Los Angeles
Galaxy. Within one hour of the announcement, Milton Keynes had registered
three domain names featuring the term “lagalaxy” in an apparent attempt to
capitalize on the buzz surrounding the famous soccer player’s decision to
play soccer in the United States. Jonathan Robinson, chief operating officer
at NetNames, a leading domain name provider, states, “This is some of the
fastest cyber-squatting I have ever seen.” Most cybersquatters are expected
to redirect their newly registered domain names to pay-per-click websites
with sponsored advertisements provided by companies such as Google.
Link to Full Story
Dell Sues Family of
Typo-Squatters
Vnunet.com, January 12, 2007: Computer manufacturer
Dell has sued Alf, Lars, and Kim Temme for registering a series of domain
names that Dell claims are infringements of its registered DELL trademark.
The domain names at issue are: <d3ell.com>,
<de3ll.com>, <d4ell.com>, <de4ll.com>, <dedll.com>, <derll.com>, and
<dxell.com>. The suit, brought in a Texas federal district court, seeks to
strip the Temmes of the disputed domain names as well as recover legal fees
and damages.
Link to Full Story
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